UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`AMERICAN EXPRESS COMPANY, AMERICAN EXPRESS TRAVEL
`RELATED SERVICES COMPANY, INC., EXPEDIA, INC.,
`HOTELS.COM LP, HOTELS.COM GP, LLC, HOTWIRE, INC., ORBITZ
`WORLDWIDE, INC., PRICELINE.COM, INC., TRAVELOCITY.COM LP,
`and YAHOO! INC.
`Petitioner
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`v.
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`METASEARCH SYSTEMS, LLC
`Patent Owner
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`CASE CBM2014-00001
`Patent 8,326,924 B1
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`METASEARCH SYSTEMS LLC’S REPLY IN SUPPORT OF ITS
`CONTINGENT MOTION TO AMEND UNDER 37 C.F.R. § 42.121
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark
`Office P.O. Box 1450
`Alexandria, VA 22313-1450
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`85182099.1
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`AMERICAN EXPRESS COMPANY, AMERICAN EXPRESS TRAVEL
`RELATED SERVICES COMPANY, INC., EXPEDIA, INC.,
`HOTELS.COM LP, HOTELS.COM GP, LLC, HOTWIRE, INC., ORBITZ
`WORLDWIDE, INC., PRICELINE.COM, INC., TRAVELOCITY.COM LP,
`and YAHOO! INC.
`Petitioner
`
`v.
`
`METASEARCH SYSTEMS, LLC
`Patent Owner
`
`
`CASE CBM2014-00001
`Patent 8,326,924 B1
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`METASEARCH SYSTEMS LLC’S REPLY IN SUPPORT OF ITS
`CONTINGENT MOTION TO AMEND UNDER 37 C.F.R. § 42.121
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark
`Office P.O. Box 1450
`Alexandria, VA 22313-1450
`
`85182099.1
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`TABLE OF
`CONTENTS
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`INTRODUCTION .............................................................................................................................. 1
`I.
`II. ARGUMENT ....................................................................................................................................... 1
`A. The Amended Claims Provide Reasonable Certainty To One of Skill In the Art As to The
`Scope of the Claims. ............................................................................................................................... 1
`B. The Amended Claims Are Enabled and Particularly Described in the 2000 Application
`from which the ’924 Patent Claims Priority. ...................................................................................... 2
`C. The Amended Claims Are Directed At Patent-Eligible Subject Matter. ................................ 3
`D. The Amended Claims Are Non-Obvious In View of The Closest Art. .................................. 4
`III.
`CONCLUSION ............................................................................................................................... 5
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`85182099.1
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`I.
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`INTRODUCTION
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`CBM2014-00001
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`Metasearch’s contingent motion to amend the claims should be
`granted because Petitioners’ have not raised any viable reason why the
`amended claims should not be allowed. Rather, Petitioners distract the
`Board with issues that are unsupported in law or fact. The proposed
`amended claims satisfy all requirements under Title 35, and should be
`entered if original claims 2 and 6 are found unpatentable.
`
`II. ARGUMENT
`
`Petitioners assert that the amended claims are indefinite, lack
`enablement, are directed at an abstract idea, and are obvious in view of
`Knowledge Broker. Each unsupported ground is refuted below.
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`A. The Amended Claims Provide Reasonable Certainty To One of Skill
`In the Art As to The Scope of the Claims.
`
`Petitioners take two terms of the claims out of context in an attempt
`to create ambiguity where it does not exist. First, Petitioners argue that the
`term “travel related” is ambiguous because people may differ on what is
`considered a “travel related” item. However, Petitioners improperly ask
`the Board to require absolute precision in the claims. Such a stark
`requirement has been rejected by the Supreme Court because of the
`inherent imprecision in language. Nautilus, Inc. v. Biosig Instruments, Inc.,
`134 S.Ct. 2120, 2128-2130 (2014). Indeed, Petitioners’ purported expert
`does not opine that the amended claims are ambiguous, but only what his
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`conclusions are as to whether the terms are “travel related” items. Dr.
`Carbonell, Patent Owner’s expert and one of skill in the art (which
`Petitioners do not challenge that Dr. Carbonell is one of skill in the art),
`confirms that one of skill in the art would know with reasonable certainty
`the scope of the amended claims. Ex. 2042, at ¶¶ 2-8.
`
`Petitioners’ argument regarding when the previous search occurs is
`misleading. The amended claims require that the previous search results
`be stored in the database. Ex. 2018 and 2019. The claims do not restrict
`when the prior search occurred, only that the previous search results be
`stored in the database. Petitioners’ attempt to create an issue based on
`when the search occurred has nothing to do with the claims. One of skill
`would understand that the claims’ scope is limited to those situations
`wherein the previous search results are stored in a database, regardless of
`when the search occurred.
`
`B. The Amended Claims Are Enabled and Particularly Described in the
`2000 Application from which the ’924 Patent Claims Priority.
`
`The amended claims are enabled and described with more than
`sufficient specificity in the 2000 application from which the ’924 patent
`claims priority. The claim chart provided in the Motion to Amend
`provides specific citations to the 2000 application (Ex. 2016) for each claim
`element. These citations provide one of skill in the art sufficient disclosure
`to implement the claimed inventions and sufficient detail that the Patent
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`Owner was in possession of the claimed inventions in 2000. Ex. 2042, ¶¶ 9-
`17.
`
`Petitioners do not offer any expert testimony to refute this fact.
`Rather, Petitioners misconstrue the testimony of Patent Owner’s experts.
`Patent Owner’s experts referred to unique challenges in handling
`structured, semistructured, and unstructured data, but the experts did not
`testify that such challenges were not overcome by the disclosure in the
`2000 application. Indeed, Petitioners do not cite any such testimony
`
`Lastly, Petitioners make the unfounded argument that the claims
`require the use of the stored results in lieu of a current search results. The
`amended claims do not have such limitation. Ex. 2018 and 2019. Rather,
`the claims require that the previously stored results be combined with the
`present search results and then this combination is provided to the user.
`Ex. 2018 at (f) and (g) and 2019 at (f) and (g). The use of the term “cache”
`in the Motion was simply shorthand to refer to the database that stored the
`previous search results. It did not limit the scope of the claims in a manner
`that is inconsistent with the plain language of the amended claims.
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`C. The Amended Claims Are Directed At Patent-Eligible Subject
`Matter.
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`The amended claims are directed at a comprehensive system for
`searching for items from multiple unique hosts, one being a database with
`previous search results, and processing orders for such items. Petitioners’
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`arguments are fundamentally flawed in that they do not consider the
`amended claims as a whole, and focus solely on the additional limitations
`in the amended claims. Such practice is contrary to the Supreme Court’s
`ruling in Alice. For this reason alone, Petitioners’ arguments should be
`rejected.
`
`Nevertheless, the claims are directed at a very specific, narrow
`application of a metasearch engine that conducts searches for an item
`based on a user’s query and searches a database of previously stored
`results (also based on the user’s query), then combines both results in a
`response sent to the user, and then processes an order request from the
`user. The amended claims have additional structure of the database that is
`in connection with the metasearch engine. Thus, the claims are not
`directed an abstract idea, and have sufficient claimed structure. Moreover,
`the amended claims are directed at the technological solution of combining
`a metasearch engine with a database having stored previous search results
`and an e-commerce component. Thus, the amended claims are directed to
`patent-eligible subject matter because they claim a technological solution.
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`D. The Amended Claims Are Non-Obvious In View of The Closest Art.
`
`The parties agree that the closest prior art references to the amended
`claims is the Knowledge Broker references. However, these references fail
`to either teach or render obvious the amended claims because Knowledge
`Broker did not store search results as required in the amended claims.
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`Rather, Knowledge Broker stored prior search queries that could be re-run
`if similar requests were made. Ex. 1045 at 776-777. Figure 2 shows that the
`search queries, called “specialist cache,” are stored in the broker.
`However, the results are stored in an external archive, called “opera
`database,” which is accessed by a search query stored in the “specialist
`cache” in response to a query.
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`The amended claims require that the previous search results, and not
`the previous search queries, be stored in the database. Ex. 2018 at (c) and
`2019 at (c). Knowledge Broker does not disclose this claim element in the
`amended claims. Moreover, Petitioners fail to offer any explanation why
`one of skill in the art would have a reasonable expectation of success in
`modifying the Knowledge Broker system to create the claimed method.
`Therefore, the amended claims are non-obvious in view of the closest prior
`art references found by the parties.
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`III. CONCLUSION
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`Petitioners have not set forth any viable reason why the amended
`claims are unpatentable. Thus, Metasearch respectfully requests that the
`following substitute claims 13-14 be entered if the original claims 2 and 6
`of the ’924 patent are cancelled.
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`CBM2014-00001
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`Dated: October 2, 2014 Respectfully submitted,
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` ROBINS, KAPLAN, MILLER & CIRESI LLP
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` By /Cyrus A. Morton /
`Cyrus A. Morton, Lead Counsel
`Registration No. 44,954
`Ryan M. Schultz, Backup Counsel
`Registration No. 65,134
`Bryan J. Mechell, Backup Counsel
`Registration No. 69,700
`Robins, Kaplan, Miller & Ciresi LLP
`2800 LaSalle Plaza
`800 LaSalle Ave
`Minneapolis, MN 55402-2015
`612-349-8722
`612-349-8500
`Attorneys for Patent Owner
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`CASE CBM2014-00001
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`CERTIFICATE OF SERVICE
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` hereby certify that on this 2nd of October, 2014, a copy of
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` I
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`“METASEARCH’S REPLY IN SUPPORT OF ITS MOTION TO AMEND
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`UNDER 37 C.F.R. §42.121” has been served in its entirety by e-mail on the
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`Petitioners:
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`john.vandenberg@klarquist.com
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`kristen.reichenbach@klarquist.com
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`chris.carraway@klarquist.com
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`hallie.zmroczek@klarquist.com
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`Respectfully submitted,
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`/Ryan M. Schultz/
`Ryan M. Schultz
`Registration No. 65,134
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`Dated: October 2, 2014
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`85182099.1
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